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Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

August 8, 2016

Overview

Murata v. Daifuku – This case presents an unusual evaluation of whether a case should be stayed pending an IPR. Because the decision to grant or deny a stay is not appealable, this issue has not yet come to the Circuit and is not likely to be decided by the court very often. The Circuit considered the issue in this case because it arose as part of an interlocutory appeal of a denial of a motion for preliminary injunction, which was decided at the same time as the stay issue. In this case, the panel deferred to the broad discretion of the district court in managing its cases and in deciding whether a stay was appropriate. However, because the court had summarily denied the motion for preliminary injunction without evaluating the appropriate considerations, the denial of the motion for preliminary injunction was vacated and remanded.

The district court granted the stay after defendant Daifuku had initiated IPRs as to the two patents in suit. Murata then added two more patents to the case and moved to lift the stay as to the patents that had been added. The district court applied the four part test used in deciding whether a stay should be granted in Covered Business Method reviews, and declined to lift the stay. Murata had also moved for preliminary injunction as to the two new patents and the district court denied the motion, with a cursory one paragraph ruling concluding with the statement: “Because the court has now declined to lift the stay, the Motion for Preliminary Injunction is denied without prejudice to renew at a later date, if appropriate.”

As noted above, the panel affirms the denial of the motion to lift the stay but rules that the district court should have fully addressed the preliminary injunction motion, and not treated it as part of the motion to lift the stay. Rule 52(a) of the Federal Rules requires the district court to perform a complete analysis of the issues to be considered on a motion for injunction, and must issue findings of fact and conclusions of law that can be properly considered on appeal.

GPNE v. Apple – The Circuit affirms a judgment of non-infringement that Apple’s iPhone and iPad do not infringe two patents of GPNE because they do not operate like pagers, independent of phone networks.

First, the panel affirms the construction of “node” as “a pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network.” GPNE conceded that the specification refers to “nodes” as “pagers,” but argued that the specification also contains evidence that “node” should be construed more broadly. However, the panel notes that the specification and prosecution history repeatedly use “pager” in reference to the patented system.

GPNE also argues that claim differentiation supports its position but the panel notes, as it has in several recent decisions, that claim differentiation is not a hard and fast rule, but rather a presumption that can be overcome when the intrinsic evidence dictates a contrary construction. The claims that GPNE contrasts differ in more ways than just their use of “node” or “pager,” so the inference that different phrases used in separate claims indicate that the claims have different meanings and scope is weak at best.

GPNE also argued that the limitation “operates independently of a telephone network” is inappropriate because it is based on what it contends is a “single summation sentence” from the specification. But according to the panel, when a patent and the prosecution history describes the features of the “present invention,” this description limits the scope of the invention.

GPNE did not articulate an infringement position based on the district court’s construction of “node” so the panel ‎affirms the judgment of non-infringement. ‎The Circuit also rules that the district court did not abuse its discretion in denying GPNE’s motion for new trial based on Apple’s arguments at trial distinguishing its devices from 1990s-era pagers, effectively using historic pagers to define the term “pager.” According to GPNE, because the court allowed these arguments, the jury was left to determine the meaning of “pager,” which violated the 02 Micro rule that it is the duty of the court to resolve claim construction issues. However, according to the opinion, this duty to resolve claim construction is not without limits because such an endeavor could proceed ad infinitum, as every word—whether a claim term itself, or the words a court uses to construe a claim term—is susceptible to further definition.

Wi-LAN v. Apple –Wi-LAN contends that Apple’s iPhone operating on a 4G network infringes two patents based on developments by Ensemble Communications in the late ’90s. Wi-LAN appeals the claim construction of the term “specified connection” in its ’040 patent and the term “UL connections” in its ’640 patent. The panel first rejects Apple’s argument that the district court abused its discretion in ruling that Wi-LAN did not waive its claim construction argument as to “UL connections,” even though Wi-LAN made this claim construction argument for the first time in a motion for reconsideration of the district court’s summary-judgment order. However, the panel affirms both of the district court’s claim constructions, preventing Wi-LAN from using its older patents to encompass Apple’s iPhone.

The ’040 patent addresses an efficiency gain that a network with intermediary nodes can provide. Claim 1 focuses on the intermediary node—here claimed as a “node for a communications system”—and describes the process by which it converts non-uniform “service data units” that it receives from its user devices into uniform “protocol data units” for retransmission to the base station:

In affirming the district court’s construction of the ’040 patent, the panel credits the specification’s consistent description of intermediary nodes maintaining multiple connections to user devices and the claims’ and specification’s descriptions of “allocating” bandwidth to a specified connection based on its “priority.” The panel thus rules that “specified connection” excludes embodiments where an intermediary node can maintain only one specified connection, such as in the iPhone.

The ’640 patent describes a process by which a network with an intermediary node can allocate uplink bandwidth—its data-carrying capacity in the direction from user devices to the base station—among its various user devices. Claim 1 describes a process where the intermediary node—claimed as a “wireless subscriber radio unit” here—registers itself with the base station, requests and receives uplink bandwidth from the base station in which to transmit a second bandwidth request, makes this second bandwidth request and receives bandwidth, and then allocates this bandwidth to its “UL connections.”

The parties agree that “UL” in this term means “uplink.” “Uplink” refers to a direction of data flow from user devices through intermediary nodes to the base station. The term “UL connections” thus refers to some set of connections in the uplink direction. Referring to the patent as a whole as well as the prosecution history, the panel construes this term to refer to the intermediary node’s connections with user devices, not the base station, thus rendering the iPhone non-infringing as to this patent as well.

Multilayer v. Berry – A divided panel reverses claim construction in a case involving multilayered plastic cling wrap. The district court construed the claims of the ’055 patent as not covering (i.e., closed to) blends of the resins expressly recited, instead requiring that each of inner layers be composed of only one of the resins. The majority holds that each layer may include the blended resins, as in Berry’s films.

The disputed part of the two claims at issue recites: “five inner layers, with each layer being selected from the group consisting of [four identified resins].” The claims are written in “Markush” format, a kind of claim that lists alternative elements that can be selected as part of the claimed invention. There are two separate issues of claim construction here: first, whether the Markush group is closed to resins other than the listed four, and, second, whether the Markush group is closed to blends of the four listed resins.

The majority agrees with the district court that the Markush group must be construed as closed to resins other than those identified in the claim. If construed as being open, the patent’s Markush language—“each layer being selected from the group consisting of”—would be equivalent to the phrase “each layer comprising one or more of.” To overcome the exceptionally strong presumption that a claim term set off with “consisting of” is closed to unrecited elements, the specification and prosecution history must unmistakably manifest an alternative meaning. The majority reviews the specification and holds that it does not do so in this case. The dissent argues that a “layer” is an open-ended physical structure “characterized at least by a spatial relationship to some other physical element” and that the “layer” does not “have to be one or more of the listed species” of resin.

The panel then turns to the issue of whether the claims are closed to blends of the polyethylenes, as the district court held. There is no express language permitting blends, so the Markush group is presumed closed. The presumption that Markush claims are closed to blends is distinct from, and not as strong as, the presumption that unlisted resins are excluded, which flows from use of “consisting of.” The entire panel concludes that the intrinsic evidence is unequivocal that the inner layers described in the claims are open, not closed, to blends. The Circuit thus reverses this aspect of the district court’s claim construction.

The district court’s grant of summary judgment of non-infringement was predicated on its incorrect construction of claims being closed to blends, so the panel vacates the grant of summary judgment. Lastly, the panel affirms the denial of sanctions under Rule 11, holding that the case presents numerous close and difficult questions of claim construction.

Electric Power Group v. Alstom –This case involves § 101 eligibility of claims of three patents directed to performing real-time monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying the results. The Circuit affirmsthe district court’s summary judgment that the subject matter asserted in the claims fails the tests for patent eligibility.The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101. Specifically, although the claims were lengthy and numerous, they do not go beyond the collection, analysis, and display of available information in a particular field, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.

In its analysis, the panel distinguishes the claims from those in Enfish. In that case, the Circuit relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on abstract ideas. That distinction has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, the Circuit applied the distinction to reject the § 101 challenge at stage one because the claims were focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement in how computers could carry out one of their basic functions of storage and retrieval of data. The panel finds the present case to be different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The panel then turns to stage two of the analysis, and finds nothing sufficient to remove the claims from the class of subject matter ineligible for patenting.

This case is in line with the Circuit’s continuing insistence that computer implemented claims impart a transformation to the manipulated data.

Murata and Daifuku are direct competitors in the manufacture and maintenance of automated material handling systems, which use robotic vehicles suspended on tracks from the ceilings of semiconductor cleanrooms to manipulate semiconductor components. Murata sued Daifuku in the District of Utah alleging infringement of three of its patents (the “Original Patents”). One year later, Murata moved to amend its complaint to further assert two more patents (the “Additional Patents”). Shortly thereafter, Daifuku petitioned for IPR of the Original Patents and concurrently moved to stay the litigation pending the outcome of the IPR. Daifuku relied on the traditional three factor test courts use in stay determinations: (1) stage of the proceedings; (2) potential for the stay to simplify issues; and (3) undue prejudice to the non-moving party resulting from stay. Murata opposed the stay, advocating that the court consider a fourth factor: potential for a stay to reduce the burden of litigation on the parties and the court.

Relying on the four-factor test advocated by Murata, the district court stayed the case pending Daifuku’s IPR petitions. The court’s order also granted leave for Murata to amend its complaint to add the Additional Patents, but made clear that it was staying the entire case, including any proceedings involving the Additional Patents if Murata chose to add them. The court justified staying the entire case based on Murata’s assertion in its motion to amend that litigating the Original and Additional Patents piecemeal would make little sense due to a significant discovery overlap. The court also stated that Murata could file a motion to lift the stay regarding the Additional Patents if a legitimate reason for doing so materialized.

Murata amended its complaint to include the Additional Patents. After the Board instituted the IPR on the Original Patents, Murata moved to lift the stay with regard to the Additional Patents, this time relying on the three-factor test Daifuku had first introduced and without mentioning the additional “burden of litigation” factor it earlier had advocated. Daifuku also filed IPR petitions on the Additional Patents. Before the court decided Murata’s pending motion to lift the stay, Murata moved for a preliminary injunction based on infringement of the Additional Patents.

The court denied Murata’s motion to lift the stay, relying on the four-factor test it applied when it issued the stay and finding that every factor that weighed in favor of granting the stay continued to do so. The court cited Murata’s earlier argument that litigating the Original Patents and Additional Patents separately would make “no sense.” The court reasoned that lifting the stay for only the Additional Patents might cause duplicative discovery and mentioned that, indeed, the Additional Patents now faced potential IPR proceedings. The court then held that Murata untimely filed its motion for preliminary injunction and concluded that “because the court has now declined to lift the stay, the Motion for Preliminary Injunction is denied without prejudice to renew at a later date, if appropriate.” Murata appeals the refusal to lift the stay and the denial of the preliminary injunction.

We have jurisdiction to review an interlocutory order denying a preliminary injunction in an infringement lawsuit under 28 U.S.C. § 1292(a)(1) & (c)(1). We typically do not have interlocutory jurisdiction over a decision to stay or not stay a case. During interlocutory review, however, certain “orders, which ordinarily would be nonappealable standing alone, may be reviewed” under the doctrine of pendent jurisdiction, at the court’s discretion. Considering that the district court in this case maintained the stay and denied the preliminary injunction concurrently in a single order, those decisions are inextricably linked and we exercise our discretion to consider the stay decision along with its denial of a preliminary injunction.

The Panel Defers to the District Court’s Discretion in Affirming Denial of the Motion to Lift the Stay

We first consider the denial of Murata’s motion to lift the stay with regard to the Additional Patents for an abuse of discretion. A court may lift a stay if the circumstances supporting the stay have changed such that a stay is no longer appropriate. Courts typically analyze stays under a three-factor test: (i) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (ii) whether a stay will simplify the issues in question and trial of the case; and (iii) whether discovery is complete and whether a trial date has been set. Murata’s principal argument is that the court should have relied on this three factor test and that it abused its discretion by considering an additional, fourth factor—the burden of litigation on the court and the parties—that Murata itself urged the court to adopt earlier in the case. In support of its position, Murata points out that Congress has specifically required district courts to apply the four-factor variant of the test—i.e., to include the “burden of litigation” factor as part of their analysis—for stay requests pending covered business method review. See America Invents Act § 18(b)(1) (2011). Congress did not prescribe a set of factors that courts must consider when they decide whether to stay a case pending IPR. The inference Murata would have us draw is that the “burden of litigation” factor is applicable solely to stays pending CBM review. Thus, Murata argues it was legal error for the court to have considered the burden of litigation, as the stay centered around IPRs rather than CBM reviews.

We disagree. Besides the fact that it was Murata that first advocated consideration of the “burden of litigation” factor, we nonetheless hold that consideration of this factor is well within the court’s discretion. The Supreme Court has long recognized that district courts have broad discretion to manage their dockets, including the power to grant a stay of proceedings. We have noted that with respect to a PTO reexamination, the statute need not even grant courts the power to stay related proceedings because such power already resides with the court, including the authority to stay, pending a PTO reexamination.

Attendant to the district court’s inherent power to stay proceedings is the court’s discretionary prerogative to balance considerations beyond those captured by the three-factor stay test. The burden litigation places on the court and the parties when IPR proceedings loom is one such consideration that district courts may rightfully choose to weigh. The AIA § 18(b)(1) requirement that district courts must consider the burden of litigation when faced with a CBM stay request does not bar courts from choosing to consider it in the IPR context. Indeed, legislative history confirms that Congress’s desire to enhance the role of the PTO and limit the burden of litigation on courts and parties was not limited to the CBM review context. As such, district courts might consider this factor relevant and therefore do not abuse their discretion by weighing it as part of an IPR-based stay determination.

Given the Absence of an Explanation of the Bases for Denying the Motion for Preliminary Injunction, the Circuit Is Not Able to Determine Whether There Was an Abuse of Discretion

A preliminary injunction is a drastic and extraordinary remedy which, to obtain, a moving party must demonstrate a reasonable likelihood of success on the merits, irreparable harm in the absence of a preliminary injunction, a balance of hardships tipping in its favor, and the injunction’s favorable impact on the public interest. Rule 52(a)(2) specifically requires that “in granting or refusing an interlocutory injunction, the court must state the findings and conclusions that support its action.” This rule reflects the exigency and gravity underlying a motion for preliminary injunction, as it departs from Federal Rule of Civil Procedure 52(a)(3)’s more general rule that “[t]he court is not required to state findings or conclusions when ruling on a motion under Rule 12 or 56 or, unless these rules provide otherwise, on any other motion.” We take particular note, as have our sister circuits, that the text of Rule 52 is drawn not only to a district court’s grant of a preliminary injunction motion, but also to a denial.

Here, the sum and substance of the district court’s decision regarding Murata’s preliminary injunction motion is found in a single paragraph, which concluded: “Because the court has now declined to lift the stay, the Motion for Preliminary Injunction is denied without prejudice to renew at a later date, if appropriate.” This cursory treatment of Murata’s preliminary injunction motion does not satisfy the Rule 52(a)(2) requirement that the deciding court must state factual findings and legal conclusions supporting its action. While “there are times when a district court’s failure to comply with Rule 52(a) will not necessitate a remand for clarification,” if, for example, it can be “ascertained from the record that one party or the other was clearly entitled to judgment in its favor,” this is not one of those instances. Daifuku argues that the district court effectively considered the merits of Murata’s preliminary injunction motion when it concluded that a stay would not unduly prejudice Murata. But the district court did not state as much in its opinion; nor did it suggest that this was its reasoning. In the absence of any analysis whatsoever, we cannot review the opinion for an abuse of discretion.

We hold that when a district court denies a preliminary injunction motion, it must provide an adequate reason for its decision beyond merely noting that the case has been stayed. In so holding, we maintain our view that a preliminary injunction should not be granted if there is a substantial issue of patent validity. Likewise, we recognize that both a preliminary injunction and a stay ordinarily should not be granted at the same time. We do not ask, nor do the Federal Rules of Civil Procedure require, that the district court conduct a preliminary injunction hearing, or even request a responsive brief from Daifuku.Indeed, a limited analysis may support a trial court’s denial of a preliminary injunction so long as the district court concludes that some of the requisite preliminary injunction factors disfavor the movant. We simply ask that the district court explain its views on why a preliminary injunction would or would not be appropriate in this case. Thus, we vacate the district court’s order to the extent it denies Murata’s motion for a preliminary injunction and we remand for further proceedings consistent with this opinion.

GPNE Corp. v. Apple Inc., Fed. Cir. Case 2015-1825 (August 1, 2016)

The patents at issue relate to a two-way paging system, where paging devices are capable of not only receiving messages but also sending messages back in response. GPNE asserts claims that refer to the devices as “nodes.” The claims require that the “node” be “in a data network, the data network include a plurality of nodes,” have “at least one processor,” have “a memory providing code to the processor,” and have an “interface” that transmits and receives communication signals in a particular manner. GPNE alleges direct infringement by iPhones and iPads that operate on GPRS and LTE data networks.

The court construed “node” as “pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network.” It rejected GPNE’s position that “node” cannot be described as a “pager.”

At the jury trial the parties spent time discussing whether the accused iPhones and iPads could be “pagers.” Apple asked GPNE’s witnesses and its own experts whether they thought an iPad or an iPhone was a pager. Apple also contrasted the accused iPhones and iPads to characteristics of 1990s era pagers during opening and closing arguments. GPNE did not object and presented rebuttal testimony.

During the second week of trial, GPNE requested an instruction on the construction of “pager,” but the court denied this request, instructing the jury to apply plain and ordinary meaning for terms not otherwise construed. The jury’s verdict found that the patents were not invalid, but not infringed. The court denied GPNE’s motion for JMOL and for a new trial. GPNE now appeals the denial of its post-trial motions.

The District Court Ruling Is Affirmed That “Node” Is Properly Characterized as a “Pager”

GPNE concedes that the specification consistently refers to “nodes” as “pagers,” but emphasizes that the specification also contains evidence that “node” should be construed more broadly. The words of a claim are generally given their ordinary and customary meaning, which is the meaning that the term would have to a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.

When a patent “repeatedly and consistently” characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization. Here, the words “pager” and “pager units” appear in the specification over 200 times, and, apart from the Abstract, the specification repeatedly and exclusively uses these words to refer to the devices in the patented system. Although GPNE is correct that the specification discloses information about the features the devices have and the network they operate on, none of this is inconsistent with characterizing the devices as a type of pager. The prosecution history also supports construing “node” as a type of “pager” because the inventor’s Rule 131 declaration consistently and exclusively describes the invention as a system of pagers. In light of this consistent disclosure, the district court did not err in characterizing a “node” as a “pager.”

GPNE’s claim differentiation argument does not alter this conclusion. Claim differentiation is “not a hard and fast rule,” but rather a presumption that will be overcome when the specification or prosecution history dictates a contrary construction. Because the specification and the prosecution history so consistently describe “nodes” as “pagers,” such is the case here. In addition, the claims that GPNE contrasts differ in more ways than just their use of “node” or “pager,” so the inference that “different words or phrases used in separate claims indicate that the claims have different meanings and scope” is weak at best. Accordingly, we agree with the district court that “node” is properly characterized as a “pager.”

It Is Also Affirmed That a “Node” Should Have the Capability to “Operate Independently …”

Turning to “operates independently of a telephone network,” GPNE argues that this limitation is improper because it is based on what it contends is a “single summation sentence” from the specification, reading: “Thus, the invention provides a two-way paging system which operates independently from a telephone system for wireless data communication between users.” We agree with GPNE that the phrase appears in only one sentence of the Detailed Description section, but disagree that it was improper for the district court to limit the claims in this way. When a patent describes the features of the “present invention” as a whole, this description limits the scope of the invention. As GPNE recognizes, this is a summation sentence which describes “the invention” as a whole. This characterization is bolstered by the prosecution history, as the inventor’s Rule 131 declaration several times states that the invention operates independently of a telephone network. Accordingly, it was proper for the district court to conclude that a “node” should have the capability to “operate independently from a telephone network.”

The Circuit Affirms the Ruling that Apple’s Arguments Do Not Require a New Trial

[After rejecting Apple’s argument that GPNE waived its ability to challenge the district court’s failure to construe “pager,” the opinion turns to the merits of GPNE’s argument that “pager” should have been construed.] GPNE argues that Apple devoted a substantial amount of time at trial to comparing the accused iPhones and iPads to 1990s-era legacy pagers, effectively “using legacy pagers to define the terms ‘pager’ and ‘paging systems.’” According to GPNE, because the district court allowed these arguments, the jury was left to determine the meaning of “pager,” which violated O2 Micro Intl. Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008). (“When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to construe it.”)

We disagree. In O2 Micro, we held that when the parties present a dispute regarding the scope of a claim term, it is the court’s duty to resolve it, as the ultimate question of construction is a legal question, which is for the judge and not the jury. This duty, however, is not without limit. Where a district court has resolved questions about claim scope that were raised by the parties, it is under no obligation to address other potential ambiguities that have no bearing on the operative scope of the claim. This is because such an endeavor could proceed ad infinitum, as every word—whether a claim term itself, or the words a court uses to construe a claim term—is susceptible to further definition, elucidation, and explanation.

Here, the district court’s construction was sufficient to resolve the parties’ dispute over the scope of “node.” Its construction specifies that “node” is not simply any “pager,” but one that must be capable of “two-way communications,” “transmit[ting] wireless data communications on a paging system,” and functioning on a “paging system that operates independently from a telephone network.” These requirements were sufficient to clarify that the type of “pager” a “node” must be is not a 1990s-era legacy pager, which is the post-hoc O2 Micro challenge that GPNE raises here.

At bottom, GPNE’s complaint rests not with the district court’s failure to define claim scope, but with its allowing Apple to make certain arguments to the jury. The focus of GPNE’s argument is that Apple allegedly devoted a substantial amount of time at trial to comparing the accused iPhones and iPads to 1990s-era legacy pagers. Accurately characterized, this is an argument about whether Apple’s arguments to the jury were improper by offering the jury appealingly simplifying ways to determine infringement thus inviting the jury to shirk its key factfinding function.

Applying Ninth Circuit law, we conclude that the district court did not abuse its discretion when it found that Apple’s arguments did not require a new trial. Whether Apple’s accused iPhones and iPads could be “pagers” was extensively debated at trial. GPNE had ample opportunities to present rebuttal testimony and argument that the iPhones and iPads were “pagers,” and it took advantage of these opportunities on a number of occasions. Given this counter-balancing testimony and argument, it was within the district court’s discretion to conclude that the jury was not misguided in carrying out its role as infringement factfinder and that a new trial was not warranted.

In sum, none of the arguments that GPNE raises with respect to claim scope compel us to remand for a new trial. The district court correctly construed the terms and instructed the jury to apply its constructions. It also sufficiently resolved questions regarding the scope of “node” such that no O2 Micro problems are present here. We also discern no abuse of discretion in the district court’s rejection of GPNE’s proposed jury instruction or refusal to grant a new trial on the basis of Apple’s pager-based arguments; thus, the district court properly rejected GPNE’s request for a new trial on these grounds.

The Judgment of Non-Infringement Is Affirmed

GPNE does not appear to articulate an infringement position under the district court’s construction of “node.” Accordingly, because we affirm the district court’s construction and find no basis under which GPNE is entitled to a new trial, we affirm the district court’s judgment of non-infringement.

[Given the sheer length of this opinion, the following is not as condensed as other opinions we discuss.]

Wi-LAN claims that Apple’s iPhone operating on a 4G network infringes its ’040 and ’640 patents. After construing the claims, the district court granted Apple summary judgment of noninfringement on all asserted claims. Wi-LAN takes issue with two of the court’s claim constructions, and asks the Circuit to reverse the grant of summary judgment on all asserted claims of the ’040 patent and two claims of the ’640 patent.

The ’040 patent addresses an efficiency gain that a network with intermediary nodes can provide: before an intermediary node passes data packets it receives from its users to the base station, it can reformat these packets for easier transmission on the network. Claim 1 is representative for our purposes. It focuses on the intermediary node—here claimed as a “node for a communications system”—and describes the process by which it converts non-uniform “service data units” that it receives from its user devices into uniform “protocol data units” for retransmission to the base station:

The ’640 patent describes a process by which a network with an intermediary node can allocate uplink bandwidth—its data-carrying capacity in the direction from user devices to the base station—among its various user devices. Claim 1 is exemplary for our purposes. It describes a process where the intermediary node—claimed as a “wireless subscriber radio unit” here—registers itself with the base station, requests and receives uplink bandwidth from the base station in which to transmit a second bandwidth request, makes this second bandwidth request and receives bandwidth, and then allocates this bandwidth to its “UL connections.”

Wi-LAN sued Apple for infringement, asserting the ’040 and ’640 patents against Apple’s iPhones running on a 4G network. The case progressed through claim construction, where the district court construed several terms including the two at issue before us: “specified connection” in the ’040 patent and “UL connections” in the ’640 patent. For “specified connection,” the court adopted Apple’s proposed construction, defining the term as “the communications link between a[n intermediary] node and a specific end user.” The parties’ claim construction briefing on this term did not present the court with the question now before us: whether “specified connection” excludes embodiments where the intermediary node can maintain only one “specified connection.” For “UL connections,” Apple took a claim construction position consistent with the one it takes now, seeking to construe the term to mean “an uplink connection between the [intermediary node] and its users.” Wi-LAN sought a broader construction: “uplink services.” The court agreed with Apple and adopted its construction, only modifying the term Apple proposed to refer to the intermediary node.

After fact and expert discovery, Apple moved for summary judgment of noninfringement on both patents. Apple argued that the claims require multiple connections between an intermediary node and user devices. It showed that an iPhone contains only one connection between a baseband processor and an application processor. Therefore, in Apple’s view, Wi-LAN’s infringement theory that an iPhone’s baseband processor is an intermediary node and the phone’s application processor is a user device could not succeed. Apple’s motion focused on the claim terms “specified connection” in the ’040 patent and “UL connection” in the ’640 patent (along with the term “connection” in claim 6 of the ’640 patent, which Wi-LAN does not appeal), which Wi-LAN had identified in its infringement contentions as corresponding to the connection between an iPhone’s baseband processor and application processor. For the ’040 patent, Apple sought a further construction of “specified connection” to exclude embodiments where an intermediary node can maintain only one specified connection. Under this construction, Wi-LAN’s infringement theory would fail because the iPhone’s intermediary node (the baseband processor) would connect to only one user device (the application processor). For the ’640 patent, Apple argued that the claims’ requirement of a “plurality” of queues, each corresponding to “one or more UL connections,” could not encompass a device with only one “UL connection.” Again, this argument would cause Wi-LAN’s infringement theory to fail because it points only to a single “UL connection.” In its summary-judgment order, the district court agreed to consider Apple’s proposal to further construe “specified connection,” construed the term as Apple proposed, found its constructions of “specified connection” and “UL connections” to preclude any disputed issues of material fact on any asserted claim, and entered summary judgment of noninfringement.

Wi-LAN moved for the district court to reconsider its grant of summary judgment as to all asserted claims of the ’040 patent and independent claim 1 and dependent claim 2 of the ’640 patent. In this motion for reconsideration, it presented a new infringement theory and sought a corresponding new construction of the terms “specified connection” and “UL connections.” The court mentioned several reasons why Wi-LAN’s new proposed construction came too late, but it ultimately considered—and rejected—this construction on its merits. It therefore declined to reverse its grant of summary judgment.

Wi-LAN now appeals on both patents. For the ’040 patent, it drops the argument it made in its motion for reconsideration, instead appealing directly from the district court’s grant of summary judgment. It claims the district court erroneously granted summary judgment because it misconstrued “specified connection” to exclude embodiments where the intermediary node can maintain only one “specified connection.” It applies this argument to each claim it asserted: independent claims 1, 14, and 16 and dependent claims 2, 4, 5, and 15. For the ’640 patent, it appeals only claims 1 and 2, the two claims on which it moved for reconsideration below. For these claims, it makes the argument it made in its motion for reconsideration: that we should construe the term “UL connections” to refer not to the intermediary node’s connections with its user devices, but instead to its connection with the base station.

’040 Patent: “Specified Connection”

The ’040 patent discloses an intermediary-node architecture in which an intermediary node repackages data its user devices send it for more efficient retransmission to the base station. User devices can transmit data to a network in digital packets in various different formats, which the ’040 patent labels “service data units” or “SDUs.” For example, a user on a phone call might transmit voice data, and one sending an email might transmit internet-protocol data. In a network where the base station connects directly to user devices, it receives these non-uniform packets directly. The variations in packet format and length create inefficiencies that limit the amount of data the prior-art base station could receive. The ’040 patent’s intermediary node overcomes this problem by repackaging the various non-uniform service data units into a single, uniform format that the patent labels a “protocol data unit” or “PDU” and sends them along to the base station. The base station thus receives all incoming data in an efficient, uniform format. The intermediary node engages in the reverse process when relaying data from the base station to its user devices, receiving data in a uniform format and converting it into the appropriate formats its user devices require.

The parties agree that the claims use the term “specified connection” to refer to a connection between the intermediary node and the user device. They dispute whether the term “specified connection” excludes embodiments where an intermediary device can maintain only one specified connection. Because an iPhone has only one connection between its application processor and baseband processor, Wi-LAN contends that the claims can read on an embodiment where the intermediary node can maintain only one “specified connection.” Apple, in contrast, argues that the court correctly construed the term “specified connection” to exclude such an embodiment.

Although the term “specified connection” in the claims is singular, the claims’ usage of the term (e.g., “each SDU being associated with a specified connection”) indicates that each service data unit—in a claim that contemplates multiple service data units—is associated with exactly one “specified connection,” not that the intermediary node maintains only one “specified connection.” This fact thus offers no clues as to whether the invention excludes embodiments incapable of maintaining multiple specified connections.

Neither party argues that the specification explicitly defines the term “specified connection.” In fact, it never mentions this term. The specification’s consistent descriptions of multiple specified connections, however, suggest that the patent’s claims do not encompass an embodiment contrary to these descriptions. The specification similarly discusses “a plurality of user connections.” And it never describes a system with only one specified connection.

Consistent use of a term in a particular way in the specification can inform the proper construction of that term. Here, we find the specification’s consistent references to multiple “specified connections” to weigh in favor of a construction excluding embodiments where the intermediary node is capable of maintaining only one “specified connection.”

We also find the claims’ discussion of allocating bandwidth based on a specified connection’s priority to support the district court’s conclusion. Each independent claim at issue contains a limitation related to allocating bandwidth based on a specified connection’s priority. ’040 patent at claim 1 (“[the intermediary node] allocate[s] bandwidth for the specified connection, based on the priority of the connection”), claim 14 (“bandwidth currently allocated to the specified connection in a current frame based on the priority associated with the specified connection”), claim 16 (“the bandwidth amount allocated to the specified connection in a current frame, the bandwidth amount being established . . . based on one or more communication parameters . . . including the priority of the specified connection”). To “allocate” something is to distribute it among multiple recipients. Thus when the claims describe allocating bandwidth to a specified connection, they imply that the intermediary node distributes this bandwidth among multiple specified connections. The claims further describe this allocation as based on a specified connection’s “priority.” Priority is a relative concept: a specified connection only has a “priority” in comparison to other specified connections’ priorities. The specification reinforces this conception of “priority” as necessarily relative. It describes specified connections’ priorities as “high priority,” “mid[ ]priority,” and “lower priority.” “High” and “mid” are relative words that can be defined only by reference to other priorities. “Lower” is even more explicitly comparative: as a matter of basic grammar something cannot be “lower” without being lower than something else. The claims’ and specification’s discussion of “allocating” bandwidth to a specified connection based on its “priority” therefore supports the conclusion that the district court correctly construed the term “specified connection” to exclude embodiments where an intermediary device can maintain only one specified connection.

Wi-LAN attempts to undercut the district court’s conclusion by pointing to instances where the intrinsic record describes an intermediary node maintaining a single connection. But Wi-LAN reads these disclosures incorrectly. First, it notes that in a dependent claim and the prosecution history, the patentee refers to the specified connections with the singular terms “a specified connection” and “the specified connection.” These uses, however, do not refer to any scheme where a node maintains a single “specified connection.” Instead, they use the singular to point to one particular specified connection out of multiple ones. Id. Second, Wi-LAN notes that the patent includes a figure labeling a portion of a protocol data unit’s header as a “connection identifier.” It claims that this term—using the singular “connection” rather than the plural “connections”—implies that the intermediary node maintains only one specified connection. This argument misapprehends the grammatical role that the word “connection” plays in the term “connection identifier.” “Connection” in this context is a noun adjunct modifying “identifier.” Noun adjuncts are typically singular, whether they refer to single or multiple objects. For example, a bush with a single rose would be a “rosebush,” but so would a bush with multiple roses; a bus taking children to a school would be a “school bus,” but so would a bus taking children to multiple schools. Wi-LAN’s argument that an identifier differentiating between multiple connections must be called a “connections identifier” would make sense only in a grammatical system where a child would wait by the “roses bush” for the “schools bus” to pick her up. Figure 3 of the ’040 patent demonstrates that the patentee shared our grammatical understanding, labeling an interface for multiple connections a “connection interface” rather than a “connections interface.”

Wi-LAN further argues that, because a preferred embodiment of the claimed invention contains only one specified connection, a construction excluding this embodiment cannot be proper. Wi-LAN points to the provisional application to which the ’040 patent claims priority, which refers to a node combining multiple short packets from a single connection into a larger packet with only one header in order to save space. However, Wi-LAN cites nothing in the specification of the ’040 patent disclosing this embodiment. In any event, Wi-LAN is also incorrect that the provisional application discloses an embodiment with one specified connection. Instead, the disclosure Wi-LAN cites states simply that sometimes the node may receive a stream of data on one of its specified connections and create bundled protocol data units consisting only of data from that stream.

Because we credit the specification’s consistent descriptions of intermediary nodes maintaining multiple connections to user devices and the claims’ and specification’s descriptions of “allocating” bandwidth to a specified connection based on its “priority,” and because we do not find Wi-LAN’s arguments against the district court’s construction persuasive, we agree with the district court that “specified connection” excludes embodiments where an intermediary node can maintain only one specified connection. Wi-LAN bases its appeal of the district court’s grant of summary judgment solely on this claim construction issue. Because we affirm the construction, we also affirm the grant of summary judgment of noninfringement.

’640 Patent: “UL Connections”

Apple argues on appeal that waiver bars Wi-LAN’s attempt to change its position, urging us to reject what it views as Wi-LAN’s attempt to take one position on claim construction below and, after that position failed on summary judgment, get another bite at the proverbial—and in this case literal—Apple by changing its construction. [After an extended discussion of the facts regarding waiver, the panel rejects the waiver argument.] Here, the district court used its case-management discretion to decline to find Wi-LAN’s new construction barred and instead to make a merits determination. We find that it did not abuse its discretion in deciding to resolve Wi-LAN’s motion for reconsideration on its merits.

The ’640 patent describes a way to more efficiently allocate uplink bandwidth in a network with an intermediary node. Uplink bandwidth, in this context, refers to the bandwidth available to the network to transmit data from user devices to the base station. A network where multiple user devices share the same frequency bands must have an organized system to determine which user device may transmit data to the base station in a given frequency band at a given time. Otherwise, two devices could attempt to transmit data on the same frequency band at the same time, causing the base station to lose the data from one or both user devices. A network must allocate its connected devices opportunities to send data in a way that avoids this type of overlap. In doing so, it can consider the various user devices’ quality-of-service (QoS) needs. For example, a user on a telephone call might have a high-priority quality-of-service need that would require consistent access to the network to avoid a delay in transmission that could cause the call to skip or lag. A user attempting to send a file by email, in contrast, would not share this high-priority need for immediate or consistent access to the network and could instead wait for an opportunity to send all of her data in a short burst.

In a wireless network where each user device connects directly to the base station, each user device requests bandwidth from the base station, indicating the amount of data it has to upload and its quality-of-service needs. The base station processes these requests and fairly distributes bandwidth among user devices. The ’640 patent describes an invention that uses intermediary nodes to make this process more efficient. Rather than sending requests for bandwidth directly to the base station, users in the claimed network first send these requests to the network’s intermediary nodes. The intermediary nodes then bundle the users’ requests and transmit a single request for bandwidth to the base station. Id. The base station considers the bundled requests from each of its intermediary nodes, determines how to fairly allocate bandwidth among the intermediary nodes, and allocates a grant of bandwidth to each node. Each node considers the needs of each user device it serves, determines how to fairly allocate the bandwidth it has been granted among its users, and allocates a grant of bandwidth to each user.

This system confers three primary benefits over the prior art. First, it decreases the amount of bandwidth the base station must devote to receiving requests for bandwidth. In a network with no intermediary nodes, the base station would need to field separate requests from each individual user device, but in this network architecture with intermediary nodes, it receives a smaller number of bundled requests from its intermediary nodes. This smaller number of requests takes up less bandwidth, allowing the base station to conserve this scarce resource. Second, and relatedly, the base station uses less processing power in handling this smaller number of requests. Third, it allows an intermediary node to change its allocation of bandwidth on the fly when it receives higher-priority data while it is waiting for a bandwidth allocation, allowing “for more flexibility at the [intermediary node] and more intelligent allocation of the limited bandwidth.”

The dispute before us centers on the term “UL connections.” The parties agree that “UL” in this term means “uplink.” “Uplink” refers to a direction of data flow from user devices through intermediary nodes to the base station; “downlink,” by contrast, refers to the direction of data flow from the base station through intermediary nodes to user devices. The term “UL connections” thus refers to some set of connections in the uplink direction.

The term appears twice in the claims at issue. Independent claim 1 states that the intermediary node queues “data pertaining to one or more UL connections with similar QoS” and “allocates the UL bandwidth grant to the one or more UL connections based on QoS priority.” This claim thus sets out a scheme where the intermediary node creates various queues based on quality-of-service priority, each queue “pertaining to one or more UL connections.” Then, once it receives a grant of uplink bandwidth from the base station, it allocates that grant, based on quality-of-service priority, to its “UL connections.”

The district court construed “UL connections” to refer to the connections between the intermediary node and its user devices. It maintained this construction on Wi-LAN’s motion that it reconsider its summary-judgment order. Under this construction, claim 1 describes the intermediary node receiving data from its user devices on “UL connections,” placing that data into queues based on its quality-of-service priority, receiving a grant of uplink bandwidth from the base station, and then allocating that bandwidth to its various user devices based on the data’s priority level.

Wi-LAN urges a construction where “UL connections” refers to the connection between an intermediary node and the base station. The parties thus present a choice: the term “UL connections” refers either to the connection between a user device and its intermediary node or to the connection between an intermediary node and its base station. We agree that this term can refer to only one of these two connections. The question we must resolve is therefore which of these two connections makes the most sense in light of the evidence before us.

Because neither party argues that the plain meaning of “UL connections” helps our analysis, we begin by looking to the specification to determine whether the patentee explicitly defined the term, and conclude that the patentee did not explicitly define the term “UL connections” in the specification.

We turn next to viewing the patent as a whole as well as the prosecution history to glean clues as to claim term’s meaning. This context requires us to construe this term to refer to the intermediary node’s connections with user devices, not the base station, for three reasons: this is the only construction that squares with (1) the scheme the patent sets out where the base station allocates bandwidth to its intermediary-node connections and the intermediary nodes allocate bandwidth to their user connections, (2) the network architecture the specification describes, and (3) representations Wi-LAN made in prosecution.

1. Allocating Bandwidth

The specification describes the bandwidth-allocation process as consisting of a number of steps. First, a user device determines how much data it has to transmit to the network and with what quality-of-service needs. It next communicates these requirements to its intermediary node. The intermediary node aggregates the various requests for uplink bandwidth it has received from its user devices, and it communicates this aggregated request to the base station. The base station then aggregates all requests from the intermediary nodes it serves and allocates the bandwidth available to it among these intermediary nodes. The base station attempts to grant each intermediary node all of the uplink bandwidth it requested, but if too little bandwidth is available, it will take into account the quality-of-service needs associated with the bandwidth requests and use fairness algorithms to distribute the available bandwidth among its intermediary nodes. Once it has allocated the available uplink bandwidth between its various intermediary nodes, it informs each intermediary node of its allocation. Each intermediary node then allocates this bandwidth among its user devices. If the intermediary node receives enough uplink bandwidth to accommodate all of the requests from its user devices, it will distribute to each user device all of the bandwidth it seeks. If it does not receive enough bandwidth to accommodate its users’ needs, it performs a bandwidth-allocation process to its user devices similar to the base station’s allocation process to its intermediary nodes, considering the quality-of-service needs associated with its users’ bandwidth requests and using fairness algorithms to distribute the limited bandwidth the base station allocated it. Specifically, it first distributes bandwidth to its user services with the highest quality-of-service needs. “For each remaining QoS, . . . the [intermediary node] determines if there is bandwidth sufficient to satisfy the entire need of the QoS queue.” “If so, the [intermediary node] allocates the required bandwidth.” “Otherwise, if there is not bandwidth sufficient to satisfy the queue, the [intermediary node uses a] queue-specific fairness algorithm” to determine how to fairly distribute the limited available bandwidth within the queue. For example, under “[t]he round robin fairness algorithm,” “[c]onnections that did not receive bandwidth are given priority the next time the insufficient bandwidth condition exists.” By the time the intermediary node receives the base station’s bandwidth allocation, the intermediary node may have received new, higher-priority data from its user devices; if this is the case, it is free to allocate some of the uplink bandwidth it received for lower-priority data to transmit this new higher-priority data instead.

We derive two significant facts from this description of allocation. First, the specification unambiguously describes an allocation scheme where the base station has sole responsibility for allocating bandwidth between itself and the intermediary nodes, and an intermediary node has sole responsibility for allocating bandwidth between itself and its users. Because the claims describe “UL connections” as connections to which the intermediary node—not the base station—allocates bandwidth, this first fact suggests that these connections are the ones between the intermediary node and its users. Second, the specification describes a process—where the intermediary node sometimes allocates no bandwidth to a “UL connection”—that makes sense only under Apple’s construction. The specification makes clear that bandwidth between the base station and its intermediary nodes is a scarce resource that should not be wasted. When the intermediary node has more data in its queues than it can transmit in its limited available uplink bandwidth to the base station, it reacts to this scarcity by allocating some of its connections a block of bandwidth until it reaches a maximum allocation and then allocating no bandwidth to its remaining connections. It then makes up for allocating no bandwidth to these connections by placing them first in line—within their quality-of-service category—the next time it allocates bandwidth. The claim language makes clear that an intermediary node allocates bandwidth only to its “UL connections,” so this description of allocating no bandwidth must mean that, whatever a “UL connection” is, it is something to which the intermediary node may allocate no bandwidth when attempting to make best use of limited uplink bandwidth to the base station. Apple’s construction of “UL connection” is consistent with this disclosed allocation scheme because, when the intermediary node has more data in its queues than it can upload to the base station, it will be unable to upload data from all user devices and thus will have to choose particular “UL connections” to particular user devices that will not have their data uploaded. It will compensate for failing to upload these particular devices’ data by prioritizing their “UL connections” above all other connections of their quality of service the next time it allocates bandwidth. By contrast, Wi-LAN’s construction, where “UL connections” refers to a connection between an intermediary node and its base station, is incompatible with the specification. Under that construction, when an intermediary node has more data in its queues than it can upload to the base station, it responds by allocating no data to a “UL connection” to the base station and then prioritizing this “UL connection” to the base station the next time it allocates bandwidth. But it does not make sense for the intermediary node to decline to transmit data to the base station on a “UL connection” when its goal is to maximize a limited grant of bandwidth from the base station. Nor does it make sense to prioritize that “UL connection” above others of its quality of service the next time the intermediary node allocates bandwidth. This second fact, too, thus supports the district court’s construction.

2. The Network’s Architecture

The claims’ clear statement that an intermediary node maintains multiple “UL connections,” coupled with the specification’s description of a network architecture where an intermediary node maintains a connection to a base station and multiple connections to its user devices, suggests that “UL connections” refers to the connections between the intermediary node and its users.

Whatever definition of “UL connections” we take, the claim language makes clear that there must be multiple “UL connections.” The claims explain that an intermediary node “maintains a plurality of queues, each queue for data pertaining to one or more UL connections.” That is, the claimed intermediary device must be capable of supporting multiple queues, each potentially corresponding to multiple “UL connections.” Claim 5, which is not before us but depends from claim 1, also describes the “UL connections” claimed in claim 1 as consisting of more than one connection, referring to them as “the plurality of UL connections.”

The court construed the claim term the ’640 patent uses to refer to an intermediary node—“wireless subscriber radio unit”—to define an intermediary node as a “module that receives UL bandwidth from a base station, and allocates the bandwidth across its user connections.” Neither party appeals this construction, which makes clear that each intermediary node connects to one base station and multiple users; we must therefore take that fact as true. Statements from the specification, along with the undisputed construction of “wireless subscriber radio unit,” suggest that the intermediary node maintains a connection with one base station and multiple connections with multiple users.

3. The Prosecution History

Wi-LAN admits that it cannot show that Apple infringes claim 6 of the ’640 patent, and it does not appeal the district court’s grant of summary judgment of noninfringement on that claim. But when attempting to overcome a prior-art rejection during prosecution, it tied important language now in claim 1 to parallel language in the application claim that would become claim 6. Wi-LAN makes a claim-differentiation counterargument that we should not consider claim 6 in construing claim 1 because the patentee’s determination to use different terms—“UL connections” in claim 1 and “connections” in claim 6—implies an intent to establish different meanings for these terms. The doctrine of claim differentiation provides a presumption that differently worded claims cover different claim scope. This doctrine finds root in the legal canon of construction against superfluity. A construction that would cause two differently worded claims to cover exactly the same claim scope would render one of the claims superfluous, so we apply a presumption against such constructions.

Claim differentiation is a guide, not a rigid rule. Claim differentiation cannot overcome a contrary construction dictated by the written description or prosecution history. Nor can claim differentiation apply untethered from the reasonable meaning of the difference in claim language on which it rests. Although we might see some significance in the patentee’s decision to modify “connections” with “UL” in claim 1 but not in claim 6, that significance must be grounded in reasonable meanings of the term “UL.” The specification makes clear that “UL” refers to traffic traveling in the uplink, rather than downlink, direction. Because “UL” can reasonably relate only to the direction traffic flows through a link, not the location of the link in a network, we find Wi-LAN’s claim-differentiation argument unpersuasive, and certainly not strong enough to overcome the patentee’s statements we identify above equating language in claims 1 and 6.

Wi-LAN also uses the prosecution history to urge its own interpretation of “UL connections.” It cites a portion of the prosecution history to claim that the examiner read the claimed “UL connections” onto a connection in a prior art reference between a base station and a user device. As an initial matter, Wi-LAN’s reliance on the examiner’s interpretation of this term is weakened by statements the examiner made during prosecution candidly admitting confusion with the patentee’s wording of its claims. We accordingly give little weight to the statements Wi-LAN cites. We also note that Wi-LAN refers us to an interpretation of the term “UL connections” that the examiner made when the term appeared in a different context in a different version of the claims. Our construction of the term here depends significantly on the context in which it appears in the current claims; the examiner’s contrary construction in a different context is of limited materiality.

Faced with a choice between two possible understandings of “UL connections,” we reject Wi-LAN’s proposed construction, which conflicts with (1) the bandwidth allocation scheme the patent sets out, (2) the patent’s description of a network architecture where the intermediary node maintaining one connection with the base station and multiple connections with its user devices, and (3) statements Wi-LAN made in prosecution. Instead, we agree with the district court’s construction of “UL connections” as corresponding to the connections between the intermediary node and its user devices. Wi-LAN does not claim any other source of error with regard to the ’640 patent beyond this construction. We therefore also affirm the district court’s grant of summary judgment of noninfringement.

Conclusion

We affirm the district court’s construction of “specified connection” to exclude embodiments where an intermediary device can maintain only one specified connection. We reject Apple’s argument that Wi-LAN waived the new construction of “UL connections” that it raised for the first time on its motion for reconsideration of summary judgment. We affirm the district court’s construction of “UL connections.” Because we affirm both constructions against Wi-LAN’s challenges, we also affirm the district court’s grant of summary judgment of noninfringement.

Multilayer’s complaint accused various plastic stretch films manufactured by Berry of infringing its ’055 patent. Notably, the district court’s construction of element (b) required that each inner layer “must contain only one class of [the listed] resins, and no other resin(s),” thereby excluding blends of more than one type of resin and all unlisted resins.

In its claim construction order, the district court held that dependent claim 10 is invalid under 35 U.S.C. § 112(d). Claim 10 depends from claim 1 and further requires that “at least one said inner layer comprises low density polyethylene homopolymers.” The court found that, because LDPE is not listed in claim 1 and is chemically distinct from the four resins that are recited, “[c]laim 10 attempts to improperly broaden the scope of the closed Markush Group in element (b) of Claim 1.”

The district court granted Berry summary judgment of non-infringement, concluding over Berry’s objection that the case was ripe for summary judgment, as “an analysis of the record does not evidence any insufficiency in discovery undertaken” and “all terms relevant to the instant motion have been construed.”

The parties had agreed that “at least one of the inner layers of the Accused Films contains blends of resins from the classes of mLLDPE, ULDPE, and LLDPE—all classes of resins separately specified in claims 1 and 28.” The district court consequently held that, as a matter of law, the accused Berry films could not infringe claims 1 and 28 because those claims had been construed as closed to blends of listed resins within the inner layers of the film.

We first address element (b) of claims 1 and 28 of the ’055 patent. The disputed part of element (b) recites, “five [identifiable] inner layers, with each layer being selected from the group consisting of linear low density polyethylene [(LLDPE)], very low density polyethylene [(VLDPE)], ultra low density polyethylene [(ULDPE)], and metallocene-catalyzed linear low density polyethylene [(mLLDPE)] resins.”

A Markush claim is a particular kind of patent claim that lists alternative species or elements that can be selected as part of the claimed invention. “Claim drafters often use the term ‘group of’ to signal a Markush group. A Markush group lists specified alternatives in a patent claim, typically in the form: a member selected from the group consisting of A, B, and C.” It is generally understood that the members of the Markush group are alternatively usable for the purposes of the invention. There are two separate issues of claim construction here: first, whether the Markush group of element (b) is closed to resins other than the listed four, and, second, whether the Markush group is closed to blends of the four listed resins.

The Majority Affirms that the Markush Group Is Closed to Other Resins

To construe the inner layers of element (b) as open not only to the four recited resins but also to any other polyolefin resin conceivably suitable for use in a stretchable plastic cling film would be to construe the claims to cover any plastic film with five compositionally different inner layers, each of which contains any amount of one of the four recited resins. Construing element (b) in this manner would render the ’055 patent’s Markush language—“each layer being selected from the group consisting of”—equivalent to the phrase “each layer comprising one or more of.”

Use of the transitional phrase “consisting of” to set off a patent claim element creates a very strong presumption that that claim element is “closed” and therefore excludes any elements, steps, or ingredients not specified in the claim. Thus, if a patent claim recites “a member selected from the group consisting of A, B, and C,” the “member” is presumed to be closed to alternative ingredients D, E, and F. By contrast, the alternative transitional term “comprising” creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.

Multilayer contends that the specification of the ’055 patent does indeed evince an unmistakable intent to open the Markush group of element (b) to unrecited resins. It is true that several passages of the specification of the ’055 patent describe LDPE as a resin suitable for use in both inner and outer layers. However, we do not think that the listing of these other resins in the specification is sufficient to overcome the presumption created by the “consisting of” claim language.

Multilayer also makes much of the fact that the ’055 patent includes dependent claims that describe inner layers containing LDPE. Multilayer argues that recitation of LDPE in dependent claims of the ’055 patent should be determinative, citing the canon that a court should “strive to reach a claim construction that does not render claim language in dependent claims meaningless.”

It is true that other claims of the patent in question can be valuable sources of enlightenment as to the meaning of a claim term. But the language of a dependent claim cannot change the scope of an independent claim whose meaning is clear on its face. We have held that while it is true that dependent claims can aid in interpreting the scope of claims from which they depend, they are only an aid to interpretation and are not conclusive. The dependent claim tail cannot wag the independent claim dog.

We conclude that the specification of the ’055 patent, including its dependent claims, is insufficient to overcome the very strong presumption, created by the patent’s use of the transitional phrase “consisting of,” that the Markush group of element (b) is closed to resins other than the four recited: LLDPE, VLDPE, ULDPE, and mLLDPE.

Disagreeing with the majority’s claim construction as requiring a layer formed from the listed resins, the dissent argues that a “layer” is an open-ended physical structure “characterized at least by a spatial relationship to some other physical element” and that the “layer” does not “have to be one or more of the listed species” of resin. But, to the extent the language of element (b) is ambiguous, the district court resolved any ambiguity, construing “layer” to be “a polymer composition within the multilayer polymer structure lying over or under another.” “[O]ne skilled in the art would understand the patent to teach that layers made from polymers or layers made from polymers combined with additives must be present in each of the seven layers.” The resin (or the resin combined with a non-resin additive) itself is the layer. Multilayer has not appealed this aspect of the district court’s claim construction and has repeatedly agreed that the claim is in Markush format, requiring a layer “made from” the listed resins.

The consequence of our construction of element (b) is that claim 10 is invalid. Claim 10 recites, in relevant part, “[t]he multi-layer, thermoplastic stretch wrap film of claim 1, wherein at least one said inner layer comprises low density polyethylene homopolymers [(LDPE)].” In its opening brief Multilayer conceded that LDPE is not encompassed by LLDPE or the other types of resin recited in element (b). There can be no dispute that LDPE refers to a different category of resins than those listed in claim 1.

Because we agree with the district court that the inner layers of claim 1 must be construed as closed to unrecited resins, including LDPE, we see no error in the district court’s conclusion that dependent claim 10 is invalid. Independent claim 1 excludes LDPE from the inner layers, while dependent claim 10 includes it. As such, claim 10 is inconsistent with claim 1 and, indeed, contradicts claim 1. A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid.

The District Court Erred in Holding that the Markush Group Is Closed to Blends

By itself, the use of the transitional phrase “consisting of” does not necessarily suggest that a Markush group is closed to mixtures, combinations, or blends. Here, a layer could still “consist” of the listed resins even if the layer “consists” of a mixture of those resins. Nonetheless, there is a presumption that a Markush group is closed to mixtures of the listed elements. If a Markush claim recites “a member selected from the group consisting of A, B, and C,” the claim is presumed to permit the member to be one and only one of A, B, or C, and to exclude mixtures or combinations of A, B, and C.

All patent claims, including Markush claims, must be construed in view of the words of the claims, the specification, the prosecution history, and any relevant extrinsic evidence. Thus, the presumptions created by Markush claim language can be overcome by intrinsic evidence, and the presumption that Markush claims are closed to blends is distinct from, and not as strong as, the presumption that unlisted resins are excluded, which flows from the transitional phrase “consisting of.”

Here, the intrinsic evidence of the ’055 patent is unequivocal that the inner layers described in element (b) of claims 1 and 28 are open, not closed, to blends of the recited resins, LLDPE, VLDPE, ULDPE, and mLLDPE. For one, it is clear on its face that the term “linear low density polyethylene” (LLDPE) is one that encompasses at least metallocene-catalyzed linear low density polyethylene (mLLDPE), as mLLDPE is, by its very terms, a subtype of LLDPE prepared with a particular kind of catalyst (metallocenes). Thus, the resins listed in element (b) do not constitute four entirely different species but instead overlap to some extent. It follows that claims 1 and 28 contemplate the use of polyolefin resins that are classifiable both as an LLDPE and as an mLLDPE, which supports reading element (b) as open to “blending” LLDPE and mLLDPE within a single layer (and open to other blends of the listed resins). Dependent claim 24 also suggests reading element (b) as open to blends, as it recites “[t]he multilayer, thermoplastic stretch wrap film of claim 1, wherein at least one layer comprises a blend of at least two of said resins.”

The ’055 patent’s specification similarly supports construing element (b) as open to blends, as it repeatedly and consistently references blends in describing any and all resins, including the four resins of element (b). Three embodiments of the claimed multilayered stretch wrap film described in the Detailed Description include inner layers of composition “C,” which can contain “blended” LLDPE within a single layer. There is nothing in the prosecution history of the ’055 patent to suggest that blends are excluded and therefore nothing to contradict what is apparent from the specification.

In the light of this strong intrinsic evidence, the Markush group of element (b) must be read as open to blends of the four listed resins, LLDPE, VLDPE, ULDPE, and mLLDPE. We reverse this aspect of the district court’s claim construction.

Summary Judgment of Non-Infringement Is Vacated and Remanded

The grant of summary judgment of non-infringement was predicated on its incorrect construction of claims 1 and 28 as closed to blends of LLDPE, VLDPE, ULDPE, and mLLDPE. We therefore vacate the grant of summary judgment and remand for reconsideration of infringement under the correct construction.

The District Court Did Not Abuse Its Discretion In Ruling Berry’s Cross-Appeal to Be Without Merit

Berry contends that Multilayer failed to make reasonable pre-suit investigation of infringement and, in particular, that Multilayer’s claim constructions were frivolous. We find Berry’s cross-appeal meritless. This case presents numerous close and difficult questions of claim construction, as shown by the fact that we disagree (in part) with the district court’s interpretation of the inner layers of the claimed film.

Claim 12 is representative. [While, like the other claims in the patents, it is long, it may be helpful in understanding the panel’s analysis.]

‎12. A method of detecting events on an interconnected electric power grid in real time over a ‎wide area and automatically analyzing the events ‎on the interconnected electric power grid, the ‎method comprising:‎

receiving a plurality of data streams, each of the ‎data streams comprising sub-second, time ‎stamped synchronized phasor measurements ‎wherein the measurements in each stream are ‎collected in real time at geographically distinct ‎points over the wide area of the interconnected ‎electric power grid, the wide area comprising ‎at least two elements from among control areas, transmission companies, utilities, regional ‎reliability coordinators, and reliability jurisdictions;‎

receiving data from other power system data ‎sources, the other power system data sources ‎comprising at least one of transmission maps, ‎power plant locations, EMS/SCADA systems;‎

receiving data from a plurality of non-grid data ‎sources;‎

detecting and analyzing events in real-time from ‎the plurality of data streams from the wide ar‎ea based on at least one of limits, sensitivities ‎and rates of change for one or more measurements from the data streams and dynamic ‎stability metrics derived from analysis of the ‎measurements from the data streams includ‎ing at least one of frequency instability, voltages, power flows, phase angles, damping, and ‎oscillation modes, derived from the phasor ‎measurements and the other power system data sources in which the metrics are indicative ‎of events, grid stress, and/or grid instability, ‎over the wide area;‎

displaying the event analysis results and diag‎noses of events and associated ones of the metrics from different categories of data and the ‎derived metrics in visuals, tables, charts, or ‎combinations thereof, the data comprising at ‎least one of monitoring data, tracking data, ‎historical data, prediction data, and summary ‎data;‎

displaying concurrent visualization of measurements from the data streams and the dynamic ‎stability metrics directed to the wide area of ‎the interconnected electric power grid;‎

accumulating and updating the measurements ‎from the data streams and the dynamic stability metrics, grid data, and non-grid data in real ‎time as to wide area and local area portions of ‎the interconnected electric power grid; and

deriving a composite indicator of reliability that is ‎an indicator of power grid vulnerability and is ‎derived from a combination of one or more ‎real time measurements or computations of ‎measurements from the data streams and the ‎dynamic stability metrics covering the wide ‎area as well as non-power grid data received ‎from the non-grid data source.‎

Section 101 Analysis

Section 101 contains an important implicit exception to patentability in that laws of nature, natural phenomena, and abstract ideas are not patentable. The Supreme Court’s two-stage framework has held that a claim falls outside § 101 where (1) it is directed to a patent-ineligible concept, and (2) the particular elements of the claim, considered both individually and “as an ordered combination,” do not add enough to “transform the nature of the claim” into a patent-eligible application.

Stage 1 of the Analysis

Information as such is an intangible. Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.

Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions. They are therefore directed to an abstract idea.

The claims here are unlike the claims in Enfish, LLC v. Microsoft Corp., ‎822 F. 3d 1327 (Fed. Cir. 2016). There, we relied on the distinction made in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, ‎134 S. Ct. 2347 (2014)‎ between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on abstract ideas. That distinction has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims were focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement in how computers could carry out one of their basic functions of storage and retrieval of data. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.

Stage 2 of the Analysis

In stage two of the analysis, we find nothing sufficient to remove the claims from the class of subject matter ineligible for patenting. Most obviously, limiting the claims to the particular technological environment of power-grid monitoring is, without more, insufficient to transform them into patent-eligible applications of the abstract idea at their core.More particularly, a large portion of the lengthy claims is devoted to enumerating types of information and information sources available within the power-grid environment. But merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.

The claims in this case do not even require a new source or type of information, or new techniques for analyzing it. As a result, they do not require an arguably inventive set of components or methods, such as measurement devices or techniques, which would generate new data. They do not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information—to provide a humanly comprehensible amount of information useful for users—by itself does not transform the otherwise-abstract processes of information collection and analysis.

Inquiry therefore must turn to any requirements for how the desired result is achieved. But in this case the claims’ invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible applications. The claims at issue do not require any nonconventional computer, network, or display components, or even a non-conventional and nongeneric arrangement of known, conventional pieces, but merely call for performance of the claimed information collection, analysis, and display functions on a set of generic computer components and display devices.

Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information. That is so even as to the claim requirement of displaying concurrent visualization of two or more types of information, even if understood to require time-synchronized display: nothing in the patent contains any suggestion that the displays needed for that purpose are anything but readily available. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.

The claims in this case specify what information in the power-grid field it is desirable to gather, analyze, and display, including in real time; but they do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept in the realm of application of the information-based abstract ideas.

The district court in this case wrapped up its application of the Supreme Court’s framework by invoking an important common-sense distinction between ends sought and particular means of achieving them, between desired results (functions) and particular ways of achieving (performing) them. The court identified the problem addressed by the patents: Here, the problem is the need to monitor and analyze data from multiple distinct parts of a power grid. But, there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general. The asserted claims, the court observed, do the latter: rather than claiming some specific way of enabling a computer to monitor data from multiple sources across an electric power grid, some particular implementation, they purport to monopolize every potential solution to the problem. Whereas patenting a particular solution would incentivize further innovation in the form of alternative methods for achieving the same result, allowing such claims would inhibit innovation by prohibiting other inventors from developing their own solutions to the problem without first licensing the abstract idea.

The district court’s description is one helpful way of double-checking the application of the Supreme Court’s framework to particular claims—specifically, when determining whether the claims meet the requirement of an inventive concept in application. Indeed, the essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101, especially in the area of using generic computer and network technology to carry out economic transactions. In this case, the district court’s wrap-up description confirms its, and our, conclusion that the claims at issue fail to meet the standard for patent eligibility under § 101.